Colorful Conflicts and Bold Boundaries: A Sampling of Trademark Law in 2024

The first half of the year has seen notable developments in trademark law. Key cases have addressed the limits of parody in trademark use, the challenges of proving distinctiveness for product designs, and the ongoing debate over free speech in trademark registration. These decisions highlight the evolving nature of trademark law as it adapts to new and complex issues.

In re Post Foods, LLC

In a precedential decision in January, the TTAB affirmed the refusal of Post Foods LLC’s application to register a color mark. In re Post Foods, LLC, Serial No. 88857834 (TTAB Jan. 4, 2024) (precedential). The mark consisted of “the colors yellow, green, light blue, purple, orange, red, and pink applied to the entire surface of crisp cereal pieces” for “breakfast cereals,” in international class 30.

The cereal, Fruity Pebbles, introduced by Post Consumer Brands (“Post”) in 1971, was one of the first cereals to be directly linked to a media franchise. What many people might not know is that the original inspiration for the cereal’s flavors came from a 1960s marketing trend to infuse cereals with real fruit juice. However, technical challenges and cost led to the development of the artificial flavors and colors we associate with Fruity Pebbles today. Additionally, the cereal holds a unique place in pop culture, having been a favorite of John Lennon, who often mentioned it as his go-to breakfast choice during interviews in the 1970s. The packaging prominently features the iconic Flintstones cartoon characters, Frederick “Fred” Flintstone and his close friend and coworker, Bernard Matthew “Barney” Rubble. Notably, the cereal is named after Pebbles Flintstone, Fred’s daughter.

Post initially sought registration for both the colors and the shape of the cereal, but the examining attorney refused the application, citing the nondistinctive nature of the product design. Despite Post’s submission of extensive evidence to support its claim of acquired distinctiveness, including long use, advertising, media coverage, and sales, the evidence was deemed insufficient. Post then amended the application to remove the cereal shape, focusing solely on the colors. However, the TTAB found that Post’s evidence still did not prove that the colors alone had acquired distinctiveness. The TTAB noted that consumers encountered many similar multicolored cereals, which contradicted Post’s claim of exclusivity. Additionally, Post’s use of customer surveys was criticized for not accurately reflecting consumer association with the broader category of breakfast cereals. The TTAB ultimately concluded that Post failed to show that the multicolored cereal uniquely identified Fruity Pebbles, leading to the affirmation of the refusal to register the color mark.

Vans, Inc. v. MSCHF Product Studio, Inc.

The U.S. Court of Appeals for the Second Circuit recently issued the first appellate court opinion on parody following the U.S. Supreme Court’s decision in Jack Daniel’s v. VIP Products. Jack Daniel’s Properties v. VIP Products, No. 22-148 (S. Ct., June 8, 2023). The court ruled that First Amendment rights do not apply when an alleged infringer uses a trademark as a source identifier for their own goods, even if for expressive purposes.

In the case of Vans, Inc. v .MSCHF Product Studio, Inc., the Second Circuit examined MSCHF’s use of Vans’s trademarks on its iconic Old Skool sneaker. Vans, Inc. v. MSCHF Prod. Studio, Inc. 88 F.4th 125 (2d Cir. 2023). Key elements such as the Vans Slide Stripe, rubberized sidewall, textured toe box, visible stitching, and overall design were highlighted.

The court concluded that MSCHF’s Wavy Baby shoe improperly capitalized on Vans’ established goodwill. The court stated: “Wavy Baby incorporates and distorts the Old Skool black and white color scheme, the side stripe, the perforated sole, the logo on the heel, the logo on the footbed, and the packaging.”

MSCHF defended its product by claiming it was an expressive work and a parody of Vans’s Old Skool sneaker. However, this defense was rejected by the District Court, leading to a temporary restraining order and preliminary injunction against further sales of the Wavy Baby product. The decision was upheld on appeal, coinciding with the Supreme Court’s ruling in Jack Daniel’s, which emphasized that First Amendment protection does not apply “when the alleged infringer uses a trademark in the way the Lanham Act cares most about: as a designation of source for the infringer’s own goods.”

These rulings in the Jack Daniel’s and Vans cases highlight a significant challenge to the use of parody in product manufacturing. The boundaries between parody and spoof are increasingly unclear. The future of spoof products remains uncertain, and it will be interesting to see how these decisions impact comparative advertising and other similar legal matters moving forward.

In re Erik Brunetti                          

Erik Brunetti, an American artist and designer, is the founder of the lifestyle and clothing brand FUCT. He is known for is his landmark Supreme Court victory in securing the trademark for FUCT. Now, Brunetti faces a new legal challenge in his attempt to register the F-word as a trademark. Despite his 2019 win, Brunetti expected a smooth registration process, but the USPTO denied his application, arguing that the F-word is a “widely used commonplace word.”

Brunetti contested this decision, appealing to the TTAB. He claimed that the doctrine of “widely used commonplace words” was not established until after his Supreme Court case and that the USPTO’s refusal was retaliatory. Despite these arguments, the TTAB upheld the USPTO’s decision, stating that the F-word did not function as a trademark rather than focusing on its common usage.

Undeterred, Brunetti has taken his fight to the Federal Circuit. He maintains that the F-word is eligible for trademark protection and accuses the USPTO of creating new doctrines post-Supreme Court rulings to circumvent those decisions. Brunetti also points out that the USPTO has previously registered common terms like “LOVE,” and argues that the Supreme Court’s 2019 ruling anticipated the potential for the F-word’s registration.

Given the Supreme Court’s prior rulings in Matal v. Tam and Brunetti, which struck down similar restrictions, there is a possibility the Federal Circuit may rule in his favor if the F-word is deemed a source identifier. The outcome of this case will likely provoke strong reactions, reflecting the continued evolution and challenges in Trademark law.

Ronnie Capaldi, the author of this post, will lead a discussion of these cases at our weekly SoCal IP Institute Meeting on July 1, 2024, which will qualify for 1-hour of MCLE for the State Bar of California and is available via the internet for those who would like to participate.